DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 with respect to CN Application numbers 202110360132.5, 202110360516.7, 202110360518.6, 202110360153.7, 202110360519.0.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 2021-04-02. It is noted, however, that applicant has not filed a certified copy of the 20210360536.7 application as required by 37 CFR 1.55. Rather, receipt is acknowledged of a certified copy of foreign application 202110360536.4, however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the applicable petition fee under 37 CFR 1.17(m)(1) or (m)(2).
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-10 and 15-18 in the reply filed on 3/17/2026 is acknowledged. The traversal is on the ground(s) that the inventions of Groups I and II are not independent and distinct and do not present a serious search burden. This is not found persuasive because the inventions of Groups I and II are drawn to different statutory classes of invention requiring different classification and search and critically, as demonstrated by the prior art of record (e.g. Kohsaka, see below) the shared technical feature of Groups I and II does not represent a special technical feature. Therefore, the groups lack unity of invention. The requirement is still deemed proper and is therefore made FINAL.
Claims 11-14 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/17/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-4, 8, and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “Ti≤0.07%”, and the claim also recites “or ≤0.05%” which is the narrower statement of the range/limitation.
The claim also recites indefinite broad and narrow range limitations with respect to the content of Nb, Cr, and Mo.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3 recites a first paragraph with a final clause beginning with “and/or” followed by a semi-colon, then recites a second paragraph reciting the same or overlapping limitations also with a final clause beginning with “and/or.” It is unclear which limitations of claim 3 are required and which are optional. That is, the first paragraph is interpreted to comprise a series of limitations in the alternative and the second paragraph is interpreted to comprise a series of limitations in the alternative, but the limitations of the first and second paragraph comprise the same or overlapping subject matter. Therefore, it is unclear if all limitations in the first and second paragraph are respectively recited in the alternative, or whether the second paragraph limitations comprise indefinite broad/narrow limitations as detailed with respect to claim 2. For the purposes of examination, the claim is interpreted to only require one of the limitations in the first or second paragraph as each is listed in the alternative.
Claim 4 recites in the third paragraph “wherein the dual-phase steel has a yield strength of ≥1260MPa, preferably comprises the follow chemical components…” The term “preferably” makes the limitation unclear as to whether the recite chemical components are a required or optional limitation. (Note, however, than the entire third paragraph is separately rendered optional due to the final “or” of the second paragraph.) Claim 16 is also indefinite based on its dependency.
Claim 8 recites in the second paragraph “wherein the hot-galvanized dual-phase steel has a yield strength of ≥1180MPa, preferably comprises the follow chemical components…” The term “preferably” makes the limitation unclear as to whether the recite chemical components are a required or optional limitation. (Note, however, than the entire second paragraph is separately rendered optional due to the final “or” of the first paragraph.) Claim 17 is also indefinite based on its dependency.
Claim 16 recites numerous individual limitations each separated by “and/or” or “or” including many overlapping and repeated limitations. The claim contains such multiplicity and repeated overlapping ranges as to render the claim indefinite. Furthermore, a number of the repeated/overlapping limitations may also be considered indefinite based on the broad and narrow rationale described above. MPEP § 2173.05(c).
Claim 17 recites numerous individual limitations each separated by “and/or” or “or” including many overlapping and repeated limitations. The claim contains such multiplicity and repeated overlapping ranges as to render the claim indefinite. Furthermore, a number of the repeated/overlapping limitations may also be considered indefinite based on the broad and narrow rationale described above. MPEP § 2173.05(c).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites “optionally one or two of Cr, Mo and V,” (this limitation is recited three times, once in each paragraph of the claim) however, Claim 1, from which it depends, recites “optionally two or more of Nb, Ti, Cr, Mo and V.” As claim 1 requires two of said elements, if present, Claim 4 allowing for only one such element fails to include all of the limitations of the claim upon which it depends.
Claim 8 recites “optionally one or two of Cr, Mo and V,” however, Claim 1, from which it depends, recites “optionally two or more of Nb, Ti, Cr, Mo and V.” As claim 1 requires two of said elements, if present, Claim 8 allowing for only one such element fails to include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-7, 9-10, and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kohsaka et al. (JPWO2016/194272)(cited on IDS)(machine translation provided).
With respect to Claim 1, the claim recites the limitation “optionally two or more of Nb, Ti, Cr, Mo and V.” This limitation is interpreted such that the claimed steel may comprise none of the recited elements, or if it does include some or all of the elements it must include at least two of the recited elements.
Kohsaka teaches a steel having a tensile strength of 980 MPa or more, the steel having a microstructure comprising, by area%, 30-70% ferrite and 30-70% martensite and thus, comprising a dual-phase steel and further, where the dual-phase steel may be a hot-galvanized dual-phase steel. (abstract; pgs. 1 and 9 of translation; Table 1-3). Kohsaka teaches that the dual-phase steel has a composition, in mass%, as follows (pgs. 1, 3-5; Table 1):
Claim 1
Kohsaka
Kohsaka, Ex. B
C
0.05-0.17
0.07-0.17
0.091
Si
0.1-0.7
≤ 0.3
0.11
Mn
1.4-2.8
2.2-3.0
2.54
P
≤ 0.020
≤ 0.03
0.01
S
≤ 0.005
≤ 0.005
0.001
B
≤ 0.005
-
-
Al
0.02-0.055
≤ 0.08
0.05
Nb, Ti, Cr, Mo, V
Total sum ≤ 1.1
Mo: 0.07-0.5
Cr: 0.001-0.4
Optionally, V: 0.001-0.3
Optionally, Ti: 0.001-0.1
Optionally, Nb: 0.001-0.08
Mo: 0.21
Cr: 0.03
Nb: 0.05
Ti: 0.02
Total of Cr+Mo+Ti+Nb+V = 0.31
Fe
Balance with unavoidable impurities
Balance with inevitable impurities
Balance
Compositional ranges including zero are interpreted as optional elements. Thus, Kohsaka teaches a dual-phase steel with compositional ranges overlapping each of the instantly required ranges and a specific example falling within the instantly claimed ranges and therefore, sufficiently specific to anticipate the instantly claimed ranges including the relationship of Cr+Mo+Ti+Nb+V under 35 U.S.C. 102.
With respect to Claim 2, each range includes zero and Claim 1 (see interpretation above) does not require any of the elements. Accordingly, each range may be considered optional. Kohsaka teaches a specific example falling within the claimed ranges of Mo, Cr, Nb, and Ti (the broader ranges, as the narrower ranges are considered preferable/optional see also 112(b) rejection above) and therefore, anticipates the instant claim. (see Ex. B, Table 1; rejection of claim 1 above).
With respect to Claim 3, the claim recites a series of limitations in the alternative (see also 112(b) rejection above). Kohsaka teaches specific examples with a yield strength exceeding 590 MPa, tensile strength exceeding 980 MPa, elongation exceeding 7.5%, and a product of strength and elongation exceeding 10 GPa% and therefore, is deemed to anticipate the instant claim. (see Table 3, Exs. 11-13 based on composition Ex. B). It is also noted that the examples 11-13 exhibit ferrite and martensite average grain sizes falling within the claimed range. (see Table 3).
With respect to Claims 5-7, 9-10, and 18, the claims are drawn to the method in which the steel product of claim 1 is made and therefore, the limitations of each claim are considered product-by-process claims. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, the product-by-process limitations do not require specific identifiable structure outside that of claim 1, with the exception of claims 7 and 9-10, which requires a steel subjected to a hot galvanizing step, thereby resulting in a hot-galvanized dual-phase steel. Kohsaka teaches a dual-phase steel of Claim 1, and teaches examples subjected to hot galvanizing and therefore, meets the instant claim. (see Table 2; pg. 9 of translation).
With respect to Claim 15, the claim presents a number of limitations in the alternative, including alternative ranges for individual compositional elements. So long as a reference meets a single limitation within the list of alternative limitations, it meets the claim. Kohsaka teaches examples, such as Ex. B (see rejection of claim 1 above) with a content of C, Si, Mn, Al, and Cr+Mo+Ti+Nb+V total each falling within at least one of the recited ranges, and therefore, anticipates the instant claim.
With respect to Claim 16, the claim presents a number of limitations in the alternative, including alternative ranges for individual compositional elements and mechanical properties. So long as a reference meets a single limitation within the list of alternative limitations, it meets the claim. Kohsaka teaches examples, such as Ex. B (see rejection of claim 1 above) with a content of C, Si, Ti, and Nb falling within one or more claimed ranges and examples exhibiting one or more properties including tensile strength, yield strength, elongation, and product of strength and elongation falling within at least one of the recited ranges, and therefore, anticipates the instant claim. (see Tables 1-3).
With respect to Claim 17, the claim presents a number of limitations in the alternative, including alternative ranges for individual compositional elements and mechanical properties. So long as a reference meets a single limitation within the list of alternative limitations, it meets the claim. Kohsaka teaches examples, such as Ex. B (see rejection of claim 1 above) with a content of C, Mn, Nb, and Mo falling within one or more claimed ranges and examples exhibiting one or more properties including tensile strength, yield strength, elongation, and product of strength and elongation falling within at least one of the recited ranges, and therefore, anticipates the instant claim. (see Tables 1-3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kohsaka et al. (JPWO2016/194272) as applied to Claim 1 above (with respect to Claims 4 and 8).
With respect to Claims 1-3, 5-7, 9-10, and 15-18, in the alternative to the above rejection under 35 U.S.C. 102, Kohsaka teaches a dual-phase steel and a hot-galvanized dual-phase steel with structure including composition, mechanical properties, and microstructure overlapping the instantly claimed ranges. (see rejections of 1-3, 5-7, 9-10, and 15-18, incorporated here by reference). For example, the reference teaches “In mass%, C: 0.07% or more and 0.17% or less, Si: less than 0.3%, Mn: 2.2% or more and 3.0% or less, P: 0.03% or less, S: 0.0. 005% or less, Al: 0.08% or less, N: 0.0060% or less, Mo: 0.07% or more and 0.50% or less, Cr: 0.001% or more and 0.4% or less, (1) satisfying the formula, with the balance being composed of Fe and inevitable impurities, The area ratio of the ferrite phase is 30% or more and 70% or less, the area ratio of the martensite phase is 30% or more and 70% or less, the average grain diameter of the ferrite grains is 3.5 μm or less, and the standard deviation of the grain diameter of the ferrite grains is 1.5 μm or less, the average aspect ratio of ferrite grains is 1.8 or less, the average particle diameter of martensite grains is 3.0 μm or less, the average aspect ratio of martensite grains is 2.5 or less, and the martensite grains to be connected A steel structure in which the total area ratio of martensite grains satisfying the following formula (2) is 10% or less of the area ratio of the martensite phase: A high-strength cold-rolled steel sheet having a tensile strength of 980 MPa.” (Claim 1 of Kohsaka, pg. 11 of translation).
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 4 and 8, Kohsaka teaches compositional ranges overlapping one or more of the compositional ranges of C, Si, Mn, Nb, Ti, P, S, Al, Cr, Mo, and V. (see pgs. 1, 3-5, 11 of translation). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Accordingly, the reference is deemed to meet claims 4 and 8 each reciting a number of limitations in the alternative.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8 of U.S. Patent No. 12529124. Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a steel having at least two phases, a tensile strength of 980 MPa or more, and overlapping compositional ranges of C, Si, Mn, P, S, Al, Cr, B, Ti, Mo, and Nb and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Furthermore, while the related claims allow for more than two-phases, the instant claims are interpreted to require two-phases but, due to the open transitional phrase, do not exclude additional phases.
With respect to the instant claims 2-4, 8, and 15-17, the related claims disclose at least one compositional ranges, structure, and/or mechanical property falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-7, 9-10, and 18, the claims are drawn to product-by-process limitations, with the only additional required structure being a hot-galvanizing treatment. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1, and disclose (see, e.g., claim 8) wherein the steel is hot galvanized, it would have been obvious to one of ordinary skill in the art to hot galvanize the steel of the related claims 1-6, in order to obtain a protective coating on the steel.
Claims 1-6 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8 of U.S. Patent No. 12359273. Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a steel having at least two phases, a tensile strength of 980 MPa or more, and overlapping compositional ranges of C, Si, Mn, Al, Cr, Mo, and Ti and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Furthermore, while the related claims allow for more than two-phases, the instant claims are interpreted to require two-phases but, due to the open transitional phrase, do not exclude additional phases.
With respect to the instant claims 2-4, and 15-16, the related claims disclose at least one compositional ranges, structure, and/or mechanical property (tensile strength, yield strength, elongation) falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-6 and 18, the claims are drawn to product-by-process limitations. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1, it is deemed to meet the instant claims.
Claims 1-6 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12116647. Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a dual-phase steel, a tensile strength of 980 MPa or more (see related claim 3), and overlapping compositional ranges of C, Si, Mn, Al, Cr, Ti, Mo, and Nb and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to the instant claims 2-4, and 15-16, the related claims disclose at least one compositional ranges, structure, and/or mechanical property (tensile strength, elongation) falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-6 and 18, the claims are drawn to product-by-process limitations. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1, it is deemed to meet the instant claims.
Claims 1-6 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11339451. Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a dual-phase steel, a tensile strength of 980 MPa or more (see related claim 3), and overlapping compositional ranges of C, Si, Mn, Al, Nb, and Ti and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to the instant claims 2-4, and 15-16, the related claims disclose at least one compositional ranges, structure, and/or mechanical property (tensile strength, elongation) falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-6 and 18, the claims are drawn to product-by-process limitations. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1, it is deemed to meet the instant claims.
Claims 1-10 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 17/927771 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a dual phase steel that is galvanized, a tensile strength of 980 MPa or more (see related claim 9), and overlapping compositional ranges of C, Si, Mn, P, S, Al, Cr, Ti, Mo, V, and Nb and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to the instant claims 2-4, 8, and 15-17, the related claims disclose at least one compositional ranges, structure, and/or mechanical property falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-7, 9-10, and 18, the claims are drawn to product-by-process limitations, with the only additional required structure being a hot-galvanizing treatment. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1 wherein the steel is hot galvanized, it is deemed to meet the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 14, and 16-18 of copending Application No. 17/927781 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: with respect to the instant claim 1, the instant and related claims are both drawn a dual phase steel that is galvanized, a tensile strength of 980 MPa or more (see related claims 7-8), and overlapping compositional ranges of C, Si, Mn, P, S, Al, B, Nb, and Ti, and ranges overlapping the claimed relationship. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. The related claims also disclose wherein the steel may be galvanized. (see claims 10 and 14).
With respect to the instant claims 2-4, 8, and 15-17, the related claims disclose at least one compositional ranges, structure, and/or mechanical property falling within or overlapping at least the required limitation(s) of the respective claims. See MPEP § 2144.05.
Finally, with respect to instant claims 5-7, 9-10, and 18, the claims are drawn to product-by-process limitations, with the only additional required structure being a hot-galvanizing treatment. (see interpretation in 102 rejection above). As the related claims teach a steel meeting the instant claim 1 wherein the steel is hot galvanized, it is deemed to meet the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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